| The stem cell article by Jennifer Washburn in | | | | Washburn nor Loring/Campbell articles discuss |
| the April 12, 2006 issue of the Los Angeles | | | | that patent infringement suits against states |
| Times mentioned Jeanne Loring, an | | | | and state bodies (such as California's CIRM) |
| embryologist at the Burnham Institute in La | | | | are likely to be heard in state court, not |
| Jolla: In 1999, Loring tried to launch a | | | | federal court, according to the Supreme Court |
| company to work with stem cells, but the firm | | | | decision in Florida Prepaid |
| quickly collapsed when it couldn't raise the | | | | Postsecondary.Although there may be a |
| $100,000 in upfront fees the Wisconsin | | | | visceral reaction to lash out against patents |
| foundation [WARF] charged.Washburn's article | | | | perceived to be overbroad, the cautionary |
| did not mention an earlier article by Loring | | | | tale of NTP v. RIM suggests that sometimes |
| and co-author Cathryn Campbell, entitled | | | | negotiation is the better path for |
| "Intellectual Property and Human Embryonic | | | | infringement defendants. Further, Loring |
| Stem Cell Research," which appeared in 311 | | | | Campbell mention the possibility of an |
| Science 1716 on March 24, 2006. Therein, | | | | interference with Plurion, although this most |
| Loring and Campbell mentioned the changing | | | | likely would change only the identity of the |
| royalty fees charged by WARF in response to a | | | | owner of controlling patents. Separately, |
| "memo of understanding" (MOU) with the | | | | one recalls that the Thomson patents are |
| federal funding agency. Loring/Campbell | | | | about creating stem cells from blastocysts; |
| mentioned the "SBIR paradox" as to funding of | | | | they are not about "cloning" [SCNT] |
| small businesses, which may be a problem, | | | | technology. To date, traditional methods for |
| but not one associated with patent law.Both | | | | stem cell separation from blastocysts have |
| the Washburn and Loring/Campbell articles | | | | failed wherein SCNT is involved. There may |
| suggested that the WARF/Thomson patents would | | | | be a question of enablement as to the Thomson |
| pose a long-term threat to stem cell science. | | | | patents for cases involving SCNT, which is |
| Washburn noted the position of the | | | | where the holy grail of patient-specific stem |
| Foundation for Taxpayer and Consumer Rights, | | | | cell lines resides.As a general proposition, |
| based in Santa Monica, which urges | | | | the state taxpayers underwriting efforts such |
| California's stem cell agency to challenge | | | | as Proposition 71 have the expectation that |
| the Wisconsin patents. In greater detail, | | | | money will be used for research, not to |
| the Santa Monica group stated: The stem cell | | | | litigate the patent positions of prior |
| institute faces a threat from a foundation | | | | researchers. Extrapolating further, state |
| associated with the University of Wisconsin | | | | funding to achieve patent positions could |
| [WARF], which claims that it is owed | | | | lead to a balkanization of research, in which |
| licensing fees because it holds patents on | | | | entities from individual states (such as |
| all human embryonic stem cells in the United | | | | California, New Jersey, Maryland, Illinois, |
| States. John M. Simpson stated: "This is an | | | | Connecticut) are fighting one another, rather |
| outrageous raid on the treasury of California | | | | than collaborating.Lawrence B. Ebert is a |
| based on over-reaching patents. No other | | | | registered patent attorney located in central |
| nation in the world recognizes them. They | | | | New Jersey. He holds a Ph.D. from Stanford, a |
| are blocking vital research in the United | | | | J.D. from the University of Chicago, |
| States. I call on the stem cell institute to | | | | maintains a blog at IPBiz.blogspot.com, and |
| challenge the patents' validity."Neither the | | | | is the author of LESSONS TO BE LEARNED FROM |
| Washburn nor Loring/Campbell articles discuss | | | | THE HWANG MATTER: ANALYZING INNOVATION THE |
| the possible research safe harbor created in | | | | RIGHT WAY, published in the Journal of the |
| the Hatch-Waxman Act and codified at 35 USC | | | | Patent & Trademark Office Society [88 JPTOS |
| 271(e)(1). The breadth of this safe harbor | | | | 239 (March 2006)]. Ezine draft submitted |
| was recently affirmed in the Supreme Court | | | | April 13, 2006. |
| decision of Merck v. Integra. Neither the | | | | |